Amendments to the customs law: Payment of fees to store seized counterfeit / infringing products.

August 5, 2019

On December 22, 2018, the amendments to the Customs Law came into force.

Of particular note is the amendment to Article 15, which will directly impact the protocol in relation to counterfeit or infringing products at Mexican Customs. The amendment affects certain infringement actions available to right holders in the Industrial Property Law, including the right to request that border control seizes the products at Mexican Customs checkpoints before being imported into Mexico.

The amendment to Article 15 states: a right holder that causes any product to be seized at Mexican Customs for alleged infringement of intellectual property and for matters other than Customs Law infringements or foreign trade matters, will have to pay (i) storage fees, (ii) Customs handlings, and (iii) any other service fee related to storage.

Before the amendment, Mexican Customs used to exempt the payment for storage and necessary maneuvers, not only in criminal proceedings before the Attorney General’s Office, but also in infringement proceedings before the Mexican Patent and Trademark Office (IMPI). This new amendment to the Customs Law establishes that these services will not be exempted anymore, meaning that the right holders who are implementing these actions are obliged to pay for the storage and maneuvering of the seized products.

As a result of the above, rights holders who wish to initiate an action through the IMPI must consider that in order to do so, they will have to pay for storage of the products (whether inside the Customs facilities or in a private and separate warehouse), until the end of the infringement proceedings. The level of fees will depend on the size and quantity of products.

According to the Mexican legal system, a right holder has an alternative route of action against counterfeits and infringing products by commencing a criminal action against the wrongdoer. However, in these types of actions, the costs are covered by the Mexican Government, not the right holder.

OLIVARES anti-counterfeiting group recommends that right holders seek legal advice in relation to this amendment before commencing any administrative procedure that will result in an infringing product being seized at Mexican Customs.